DETAILED ACTION
Response to Amendment
Applicant's amendment filed July 18th, 2025 has been entered. Claims 2-7 have been amended. Claims 8-11* have been added.
The Section 112, 1st paragraph rejections made in the Office action mailed February 18th, 2025 have been partially withdrawn due to Applicant’s amendment. The rejections have been updated and reapplied to reflect Applicant’s amendments.
The Section 112, 2nd paragraph rejections made in the Office action mailed February 18th, 2025 have been partially withdrawn due to Applicant’s amendment. The rejections have been updated and reapplied to reflect Applicant’s amendments.
The Section 103 rejections made in the Office action mailed February 18th, 2025 have been withdrawn due to Applicant’s amendment. However, upon further consideration, a new ground(s) of rejection has been made.
Response to Arguments
Applicant's arguments filed July 18th, 2025 have been fully considered but they are not persuasive.
Applicant argues that their amendment fixes the Section 112, 1st and 2nd paragraph rejection issues without explaining why. The Examiner only partially agrees.
While the CPU issue has been fixed, the other more looming issue is that Applicant seems to be unskillfully combining electrokinetic devices pertaining to the window embodiment and the imaging assembly embodiment with no thought or concern as to how the parts might structurally work or go together.
Regarding the Section 103 traversal, Applicant once again slathers their response in case law gobbledygook without providing any structural analysis of the particulars of the claim language or the prior art and how the claim language traverses the prior art. The Examiner is familiar with the case law, stop reciting it and start explaining how it applies to the prior art. Otherwise, it is a waste of the Examiner’s, and worse the inventor’s, time. If Applicant is going to argue impermissible hindsight, among other buzzwords, then Applicant should explain why, with words and details, that the combination is improper.
For instance, Applicant argues that “if anything, Amesz, Matsuda, Trikha, and Kishi teach away from Applicant’s invention as claimed, because the usefulness of Applicant’s invention was not even remotely appreciated” without describing how any of the references teach away from the claimed invention (not just some imagined version Applicant has in their head). It is unclear, based on the responses, if Applicant’s representative even remotely appreciates or understands the invention.
The closest Applicant comes to any sort of critical analysis is half-hearted attempt to argue the newly added limitation of machine learning capabilities, with Examiner commentary in bold and in brackets, stating the following: “At the heart of Applicant’s invention is the feature of balancing user experience with nature [what?!], and the machine learning capabilities of the control system [what about them], unique from the use of sensors [sensors aren’t even in the independent claim], allow for control and monitoring of device usage [just replicated claim terminology, not an argument] and desirability [are we asking it on a date?].”
Finally, Applicant has uncancelled claims 8-11, which is not allowed. They should have been recorded as new claims 28-31, which will be done by the Examiner. And, withdrawn claims are not deleted but cancelled claims are. And there are now multiple antecedent basis errors in the dependent claims as a result of Applicant’s poor attempt to reinsert already non-enabled and indefinite subject matter from the independent claim.
In conclusion, this response is entirely underwhelming; it does not elucidate any further understanding of the claimed device or the applied prior art. Applicant essentially asserts the allowability of the claims without any substantial explanation as to why/how that would be.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-7 & 28-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 3-5, there is no discussion of a color filter anywhere with an electrokinetic device comprising a plurality of scalable apertures (strip or film), only that the device might act as a light filter [PGPub of current application, 0012]. The only location a color filter is mentioned is in the parent application (16/741,622) as part of an imaging assembly/sensor [PGPub of ‘622, 0037-0038].
Regarding claim 28, “the [first?] electrokinetic device is configured as an imaging assembly” once again makes no sense given the disclosure. The electrokinetic device comprising the imaging assembly in both the parent application and this one is directed to a single scalable aperture, whereas the window embodiment is directed to multiple scalable apertures, wherein the window may or may not further contain an electrokinetic device [PGPub of current application, 0011] and/or charge coupled device (CCD) camera, which is taught in the parent Applicant to comprise the imaging assembly as claimed [PGPub of current application, 0016 & PGPub of ‘622, 0028]. However, neither of these disclosures is clear enough to ascertain whether or not the imaging assembly and plurality of scalable apertures would share a first electrode as claimed.
Claims 6-7 and 29-31 are rejected for being dependent on a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the Applicant regards as his invention.
Claims 2-7 & 28-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the Applicant), regards as the invention.
Regarding claim 2, it is unclear what the scope of “machine learning capabilities learn, control, and monitor device usage” is. What “usage” (power usage, frequency usage, etc.) is it learning, controlling, and monitoring? How is it performing these functions?
Claims 6-7 and 28-31 are rejected for the same reasons as previously set forth in the previous Office action and repeated below: the invention as claimed is confusing for multiple reasons.
Applicant seems to be combining two separate and distinct embodiments set forth in the specification. While the specification states that “the present invention incorporates an electrokinetic device configured as a dynamic micro-shutter and/or a dynamic infrared (IR) filter for an imaging system and a window system” these devices are otherwise disclosed almost exclusively of one another, such as “with the use of these electrokinetic devices for imaging systems, there exists a capability for window panes to have the ability to change opacity”. The plurality of scalable apertures/shutters is disclosed exclusively in connection with the window assembly [0017-0018]. While there may be a charge-coupled device (CCD) camera or pixelated light sensor as part of the assembly, it is unclear if this is related to the “image sensor” as set forth in claim 2.
Furthermore, as related to the above issue, it is unclear if the scalable apertures/micro-shutters [PGPub, 0017-0018] and the optical path/compaction trench usable with a micro-shutter [PGPub, 0009] are related to each other and/or how they are related structurally within the claimed device. Which is related to the optical path?
Overall, the structural relationship between major claim elements is unclear and/or confusing.
Regarding claims 4-7, it is unclear how/if the window assembly further comprises a color filter, a dynamic infrared filter, or a second type of pigment, or a compaction trench in the shape of an annulus and circular lens as claimed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-7 & 28-31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “machine learning capabilities learn, control, and monitor device usage”.
This judicial exception is not integrated into a practical application because there is no significant functional and/or structural language to properly integrate it into the claimed device. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed subject matter is essentially an electrophoretic smart window, where only the placement of the solar panel on an outer layer and existence of a battery might need to be taught in.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Amesz (U.S. Pub. No. 2016/0161920 A1) (hereinafter “Amesz”) in view of Trocme (U.S. Pub. No. 2019/0296684 A1) (hereinafter “Trocme”) OR Greer et al. (U.S. Pub. No. 2015/0378231 A1) (hereinafter “Greer”) AND Shrivastava et al. (U.S. Pub. No. 2019/0317458 A1) (hereinafter “Shrivastava”) OR Rasmus-Vorrath et al. (U.S. Pub. No. 2023/0076947 A1) (hereinafter “Rasmus-Vorrath”).
Regarding claims 2-3, Amesz teaches a window blind (device) comprising a first and second transparent glass screens (substrates) and an electrophoretic display device comprising one or more pixels, each pixel comprising a (carrier) fluid and a plurality of pigment particles disposed across at least one aperture area (optical path) (plurality of scalable apertures) between, optionally additional, transparent first and second substrates [0058, 0085] and a field electrode and an surrounding/annular accumulation/collection electrode having a storage area (compaction trench) adjacent (at least partially surrounding) the aperture area, such that in a first operating state pigment particles are collected in the storage area/accumulation electrode located out of view allowing transparency/transmission of light through the at least one aperture area and in a second operating state the storage area disperses the pigment particles are distributed over the aperture area/field electrode blocking the transparency/transmission of light [0053, 0058-0063, 0074-0076], wherein the at least one aperture area is individually addressable, such as in in block or strip/louvre patterns (plurality of scalable apertures) [0039, 0095] via processing data provided by a CPU [0047, 0050], wherein while a plurality of CPUs are not taught, it has been held that a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04 IV. B. Furthermore, the window blind additionally comprises integrated electronics (carrier) comprising a power source such as a battery and/or a photovoltaic (solar) panel [0049-0050, 0055, 0077], wherein at least one the aperture area may further comprise a lens and a light detecting (image) sensor [0056, 0058, 0095].
However, it is not clear that the solar panel comprises an outer layer of an electronics carrier comprising at least one battery.
Trocme teaches a window element for a building [0001] comprising a glazing unit comprising at least one electro-reactive element whose optical transparency and/or light filtering properties may be electronically controlled, wherein a photovoltaic panel is formed as an outer layer [0157-0160, 0168], wherein the battery may be arranged within the window adjacent to the bottom crossmember or as part of the framing thereof [0087].
OR
Greer teaches an electrically variable transmissive glazing comprising, on either the pane or frame, a photovoltaic module attached to an exterior face and a battery attached to an interior face [claims 5-7, 0004-0007, 0056-0057, 0065-0066].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide an electronics carrier comprising a battery and a photovoltaic as an outer layer. One of ordinary skill in the art would have been motivated to provide the photovoltaic module with the battery situated in a relatively accessible place that also allows for separation of the photovoltaic module from the electro-reactive module for functional and aesthetic reasons [0014-0023, 0084-0087].
Further regarding claim 2, the control system having machine control capabilities as claimed is not taught.
Shrivastava teaches a switchable optical device/tintable window [0041-0042], wherein the window is part of a control network of windows [0100-0101, 0103-0104], wherein the data across the system can be collected and contemplated in order to improve detection algorithms for monitoring the window [0127, 0131].
OR
Rasmus-Vorrath teaches an optically switchable or smart window [0159-0160], wherein a controller for a single window or a plurality of electrochromic windows [0197-0198], wherein the predictive modeling is based on data from one or more physical sensors that is processed by machine learning modules which allows for benefit of continued monitoring and learning and improvement optimized for different types of conditions [0006-0010, 0091, 0249, 0320-0321, 0328, 0366, 0374, 0378, 0385, 0506].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide an electronics carrier comprising a battery and a photovoltaic as an outer layer. One of ordinary skill in the art would have been motivated to improve detection algorithms for monitoring the window [Shrivastava] OR to provide continued monitoring and learning and improvement optimized for different types of conditions [Rasmus-Vorrath].
Claims 4-7 & 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Amesz in view of Trocme OR Greer and Shrivastava OR Rasmus-Vorrath, as applied to claim 2 above, further in view of Trikha et al. (U.S. Pub. No. 2020/0150602 A1) (hereinafter “Trikha”), wherein claims 4-7 and 29-31 are even further in view of Matsuda et al. (JP 2004-061831 A) (hereinafter “Matsuda”), and optionally AND/OR Kishi (U.S. Pub. No. 2004/0239613 A1) (hereinafter “Kishi”).
Regarding claims 4-7 and 28-31, Amesz does not teach a dielectric layer, if/how the compaction trench would interact with the lens/image sensor, or that the storage area/compaction trench is substantially surrounding the optical path in an annular (circular) shape.
In the event that the light sensor of Amesz is not considered an image sensor: Trikha teaches a tintable building window comprising at least two lites (transparent substrates) and an electrochromic device disposed thereon/therebetween and a modulating controller comprising an environmental sensor disposed thereon/therebetween [0005-0007, 0014], wherein the electrochromic device may further comprise an electrophoretic/suspended particle display [0053-0054], wherein the window control system comprises one or more sensors such as a photosensor (light sensor) and or camera-/ motion-based occupancy sensor for controlling the tint automatically via environmental factors [0076, 0129, 0137-0138, 0143, 0167] and additional controlling functions based on manual user input, wherein one of the types of manual controllers can also be a camera-based motion (image) sensor for gesture-based control [0013, 0020, 0089-0090, 0127, 0166-0167].
Matsuda teaches a device comprising an electrophoretic light quantity adjusting element (first electrokinetic device) comprising a transparent first substrate (All Figs. [1]), transparent first electrode (All Figs. [4]), a transparent second electrode (All Figs. [4]) having am insulating (dielectric) layer (All Figs. [8]) formed adjacent thereto, such that a transparent insulating liquid (carrier fluid) comprising a plurality of opaque charged particles (pigments) dispersed therein [0017-0018], wherein in a first operating state a collection electrode (All Figs. [5]) in a non-opening region surrounding the transparent light-transmitting opening region (All Figs. [12]) in an annular circular shape attracts the charged particles thereto, allowing light transmission in an imaging module disposed adjacent thereto, comprising an image sensor, such as a charge coupled device (CCD) and a corresponding diameter lens [0028-0032, 0057-0059].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide dielectric layer to at least one electrode and the ability to additionally modulate a light/image sensor via an electrophoretic device having an annular accumulation electrode/storage area entirely/substantially surrounding the switchable transparency area. One of ordinary skill in the art would have been motivated to modulate light to a sensing device, wherein the modulation is improved over prior art known methods since it allows for proper miniaturization and ease of making and using [0004-0006] and to prevent charges from being injected into the electrophoretic particles and to prevent any electrochemical reaction from occurring [0024].
It would have been obvious to one of ordinary skill in the art at the time of invention to form a tintable window comprising both automated and passive sensors, including environmental sensors such as light sensors and other environmental and/or manual sensors such as camera-based image-sensors for detecting occupancy and/or gestures. One of ordinary skill in the art would have been motivated to provide modulation of window tint via both automatic and user input/manual methods for multiple types of user interaction allowing for a personalized experience [0013, 0054, 0089-0090, 0137-0138, 0148, 0166-0167].
Further regarding claims 6-7, 9, and 10, in the event that the annular (circular) compaction trench is still considered not fully taught by the storage area of Amesz/Matsuda(/Trikha):
Kishi teaches an electrophoretic display cell comprising a collection electrode disposed in annular shape around a light transmitting region, wherein the charged particles can be level with the electrodes (Fig. 2B) or substantially contained in an annular/surrounding recess (compaction trench) (Figs. 2B/3B), providing the advantage that the charged particles can be held in a larger number providing an increased open area ratio [0029, 0069].
It would have been obvious to one of ordinary skill in the art at the time of invention to form a recess/compaction trench to substantially contain the charged microparticles/pigments in an annular/peripheral region surrounding a light transmitting region. One of ordinary skill in the art would have been motivated to enhance an open area ratio [0069].
Even further regarding claim 2, in the event that the integrated electronics (carrier) comprising a battery and outer layer photovoltaic panel are not considered as taught together: Trikha teaches a tintable building window comprising an electrophoretic/suspended particle display [0053-0054] that is powered via at least one photovoltaic cell/panel [0080, 0144], wherein generated energy may be stored in a battery [0170].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide both the battery and the outer layer comprising a solar panel. One of ordinary skill in the art would have been motivated to provide a battery for storing generated power when it is not in use or over the amount necessary [0170].
Regarding claims 4-6, Amesz teaches the pixels/displays may be provided in a stack such that additional (dynamic) filtering via color, UV, and IR radiation may be provided [0051, 0056, 0076, 0080, 0091-0093, claim 3], wherein different types of particles in the UV and IR spectra may be provided [0028-0029, 0056, 0069, claim 3].
However, further regarding claim 4, an audio transducer is not taught: Trikha further teaches that in addition to occupancy/motion/gesture sensors that an audio sensor/transducer may be useable for audible user input voice commands and/or a speaker for providing information to a user [0013, 0089-0090].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide voice control and/or speaking abilities to the window in addition to gesture and/or occupancy control. One of ordinary skill in the art would have been motivated to provide the ability to communicate with a user via speaker [0089] and/or provide multiple types of user interaction that allow for a personalized experience [0013, 0054, 0089-0090, 0137-0138, 0148, 0166-0167], such as accounting for multiple types of users who might lack one or more senses being able to engage with the window device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Lee et al. (KR 2012-0011532 A) teach a window filter sheet comprising the electrokinetic device as claimed comprising first and second transparent substrates, first and second electrodes, and at least one protective insulating layer over the electrodes flanking a plurality of sidewalls forming a plurality of scalable microcells [Fig. 6], wherein the window may further comprise one or more solar cells thereon and a control unit including a driver, a light sensor, and an operation unit on a carrier [0083, Fig. 8b].
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JEFFREY A VONCH whose telephone number is (571)270-1134. The Examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Frank J Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A VONCH/Primary Examiner, Art Unit 1781 October 2nd, 2025